BACH FLOWER REMEDIES LTD
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HEALING HERBS LTD
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Mr Simon Thorley QC and Mr Michael Bloch QC (instructed by Cameron McKenna for the Appellant)
Mr Geoffrey Hobbs QC and Mr James Marshall (respectively instructed by and of Taylor Joynson Garrett for the Respondent)
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Judgment: Approved by the court for handing down
(subject to editorial corrections)
1. Edward Bach (1886-1936) trained as a doctor of medicine at University College Hospital and Cambridge University. His principal interest was homopathy. In 1930 he left London in order to concentrate on finding a new system of healing involving plant remedies. Between 1928 and 1935 he devised 38 new remedies, most of which were made from flowers, as a means of counteracting negative states of mind. He published his work by means of lectures and magazine articles in which he explained the three most important aspects of his remedies, namely prescription, method of manufacture and manner of treatment. After his death his work was carried on from his former home, Mount Vernon, Sotwell, Oxon, subsequently called the Bach Centre, by a number of individuals and organisations including the appellant Bach Flower Remedies Ltd ("BFR").
2. Between 24th February 1979 and 22nd April 1991 one or more of those individuals or organisations registered pursuant to the Trade Marks Act 1938 eight trade marks (to which, if valid, BFR is now entitled) consisting of or incorporating the word BACH in respect of products or publications within classes 5 and 16. Two of them contained the additional words FLOWER REMEDIES, two of them were for the word BACH alone, two were for the word BACH in the form of a signature and the remaining two incorporated the words BACH FLOWER REMEDIES into a device in the shape of a roundel.
3. On 31st October 1994 the Trade Marks Act 1994 came into force. By virtue of s.105 and Schedule 3 para. 2(1) of that Act each of those marks was transferred to and had effect, subject to the provisions of that schedule, as if registered under that Act. S.3(1)(a) to (d) prescribes four categories of sign or mark which should not be registered. These include (1) signs which are not capable of distinguishing goods or services of one undertaking from those of other undertakings (s.3(1)(a)), and (2) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality or other characteristics of goods (s.3(1)(c)). By virtue of s.47 any person may apply to the court for a declaration that the registration of a trade mark is invalid because it was registered in breach of one or more of the provisions of s.3. But the section also provides that where registration was in breach of the provision summarised in (2) (but not (1)) above no such declaration should be made if in consequence of the use which has been made of the mark it has after registration acquired a distinctive character in relation to the goods for which it is registered.
4. On 25th February 1997 the respondent Healing Herbs Ltd ("HHL") applied under s.47 for declarations that each of the marks had been registered in breach of each of paragraphs (a) to (d) of s.3(1). The application was heard by Neuberger J over eight days between 24th March and 6th April 1998. He concluded that (1) the registration of each mark was in breach of s.3(1)(c), (2) that in the light of that conclusion it was not necessary to reach any conclusion as to whether registration was also in breach of s.3(1)(a),(b) or (d) and (3) that HHL had made out its case at both the respective dates of registration and 1998. Accordingly he acceded to the application in all respects save that he permitted the signature marks and the device marks to remain on the register but subject to a disclaimer for the word BACH as well as the words FLOWER REMEDIES.
5. This is the appeal of BFR from that order. Though the appeal relates to each of the eight marks the argument centred on only two of them to which I should refer in more detail. The first was BACH FLOWER REMEDIES. It was registered on 24th February 1979, with a disclaimer for the words FLOWER REMEDIES, in respect of herbal preparations derived from wild flowers for medicinal purposes. Use of such mark was claimed from 1933. The second was for the word BACH alone. It was registered on 14th March 1989, to be associated with the first mark, in respect of preparations included in class 5 all for medicinal purposes and all derived from herbs and flowers.
6. BFR accepts the judge's first conclusion but disputes the third. In addition, thereby disagreeing with the judge's second conclusion, it contends that the judge should have decided whether registration of any of the marks was in breach of s.3(1)(a) as a necessary and logical preliminary to the construction and application of the other three paragraphs. HHL also contends, but for different reasons, that the judge should have reached a conclusion on whether the registrations were in breach of s.3(1)(a). Thus the two issues for our determination are:
(1) Whether registration of the marks was in breach of s.3(1)(a);
(2) Whether, on the footing that registration of each of the marks was in breach of s.3(1)(c), in consequence of its use since registration it has acquired a distinctive character in relation to flower remedies.
These issues are cumulative in that BFR must succeed on both of them if this appeal is to be allowed.
7. Before considering the issues it is necessary to set out in more detail the material provisions of the Trade Marks Act 1994, the factual background to these proceedings and the judge's conclusions. It is also necessary to refer to certain decisions of this court and of the European Court of Justice reached since Neuberger J gave judgment.
8. The Trade Marks Act 1994 was, as shown by its long title, enacted to implement Council Directive No.89/104/EEC which was designed to approximate the laws of the Member States relating to trade marks. Accordingly it is to be construed so as to give effect, so far as possible, to the Directive. The tenth recital reiterated the principle established in the case law of the European Court of Justice, see for example Canon Kabushiki Kaisha v MGM  ECR I-5507 para 28, to the effect that the function of a registered mark is to guarantee to the consumer or end-user the identity of the origin of the product to which it is applied. The wording of the Act follows closely that of the Directive and it was not suggested in argument that the Act could not be construed so as to give effect to it.
9. The following are the relevant provisions of the Trade Marks Act 1994:
"1(1) In this Act a "trade mark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging."
"3(1) The following shall not be registered -
(a) signs which do not satisfy the requirements of Section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it."
(2) A registered trade mark is not infringed by-
(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or
provided the use is in accordance with honest practices in industrial or commercial matters."
"47(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).
Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered."
10. I should also note the provisions of ss.10 and 46. In accordance with s.10(1) use of an identical mark in connection with identical goods constitutes infringement without more; but, by virtue of s.10(2), if either the mark or the goods are similar but not identical then it is necessary to demonstrate a likelihood of confusion and, by virtue of s.10(3), if the mark is identical or similar but used in connection with dissimilar goods then the use of the mark must be detrimental to the distinctive character or reputation of the registered mark or take unfair advantage of it. S.46(1)(c) provides that registration of a mark may be revoked if in consequence of acts or inactivity of the proprietor it has become the common name in the trade for a product or service for which it is registered.
11. The factual background to these proceedings is comprehensively set out in the judgment of Neuberger J, reported in  RPC 1. Both parties accept his findings of fact. Accordingly it is unnecessary for me to do more than recapitulate those parts of the judgment relevant to an understanding of the two issues before us. I will do so by reference to the appropriate passages in the judge's judgment.
12. As I have already indicated Dr Bach devised 38 flower remedies between 1928 and 1935. Each of the 38 was prepared from a flower, tree or bush or rock water. There were two methods of preparation, the sun method and the boiling method, one or other of which was to be used in relation to each of the 38 remedies. A particular remedy was prescribed for a particular mental state, for example rock rose for terror and scleranthus for indecision. The teachings of Dr Bach also indicated the method, amount and frequency of administration of each remedy. Dr Bach pointed out that for those unable to prepare their own remedies there were two suppliers, one of which is now, Nelsons, the holding company of BFR. (see generally judgment pp.8-9).
13. After the death of Dr Bach in 1936 his work was carried on from his house, renamed the Bach Centre, by Miss Nora Weeks, Mr Victor Bullen, Mr John Ramsell and Mrs Nicky Murray either personally or as partners, trustees or directors of various limited companies. In the late 1970s Mr Julian Barnard, an architect by profession, read a copy of Dr Bach's book The Twelve Healers and other Remedies. After studying herbalism he taught classes on the subject of Dr Bach and The Remedies. But his attempts to join the Bach Centre were unsuccessful. By 1988 he and his wife were manufacturing all 38 remedies and started to market them through HHL which they incorporated for that purpose. (judgment pp.9-11)
14. From 1933 to 1985 Dr Bach and the individuals who subsequently carried on his work positively encouraged others to make and use his remedies. In doing so they referred to "Bach Flower Remedies" in a generic sense, that is to say remedies made and used in accordance with the teachings of Dr Bach. During that period there were a substantial number of publications using the phrase in that generic sense. Throughout this period both the Bach Centre and Nelsons continued to make the remedies. In the mid 1960s the Bach Centre appointed various retailers to distribute the remedies made by it. In 1991 the Bach Centre granted an exclusive licence to Nelsons to make and sell the remedies and in 1993 sold its remaining business to Nelsons. (judgment pp.11-18)
15. In addition to the teachings of Dr Bach published during his lifetime and thereafter there was an increasing number of people who held themselves out as competent to make and prescribe the use of flower remedies made in accordance with those teachings. The Bach Centre did not suggest that such persons needed any form of teaching or licence from them. (judgment pp. 18-20)
16. The period in which the eight marks with which this appeal is concerned were registered, 1979 to 1991, coincided with an expansion in the demand for flower remedies and an increasingly commercial approach on the part of the Bach Centre. From 1985 onwards the Bach Centre indicated a growing awareness of and concern for imitation remedies. It threatened and in some cases commenced actions for the infringement of its marks and otherwise. (judgment 12-13)
17. At the trial there was put before the judge much written and oral evidence seeking to establish how the public regarded the word BACH and, thereby, the marks in which it was incorporated. Such evidence fell into seven categories. The first comprises the publications concerning Dr Bach and his remedies. The judge considered them in detail. (judgment pp. 15-18) He concluded (judgment pp.33-34) that down to 1979 the publications indicated that the phrase Bach Flower Remedies was a generic description as opposed to a badge of origin and that material published thereafter, though more equivocal, was more consistent with a generic meaning.
18. The second was an omnibus survey conducted by NOP Research Group Ltd in the summer 1997 in which over 9,500 people were asked about their knowledge and use of flower essences or remedies. The judge rejected this evidence as too unreliable save as a witness gathering exercise. Nevertheless even in that limited role it failed to produce more than ten witnesses who considered the marks to be distinctive of origin.
19. The third was the evidence of the interested parties, particularly that of Mr Barnard of HHL and Mr Robert Nelson Wilson and Mrs Howard of BFR. The judge considered this evidence to be helpful only in the provision of general information and background. He did not find it of assistance as to the meaning of BACH FLOWER REMEDIES or BACH because, as he put it, the witnesses in this category were parti pris. (judgment pp.21-22)
20. The fourth category were the Bach practitioners. The judge considered that their evidence should be treated with caution for all the reasons he explained. (judgment pp.22-23) The fifth category consisted of retailers. The judge considered (judgment pp.23-25) in some depth the weight to be attached to the evidence within that category given the effect in individual cases of the counter evidence of visits to their shops, their ignorance of any commercial source other than BFR and the effect of the cross-examination. The judge's overall conclusion, as expressed on page 25 of his judgment, was:
"In summary in relation to the evidence of the retailers called to give evidence before me, the position would appear to be as follows. In the retail pharmacist and health food business, a substantial proportion of individual shop operators would assume that a reference to "Bach Flower Remedies" was a reference to the respondent's products rather than a generic term, at least if they did not stop to think about it. That is explicable, at least in part, because (save to a small extent in the past seven or eight years) the only supplier of Remedies to retailers has been the respondent or Nelsons. On only slightly more careful consideration, the majority of such retailers think that "Bach Flower Remedies" is not so much a badge of origin as a generic term. This would seem to be in part attributable to the fact that the expression is, as Mr Bloch and Mr Whittle themselves put it in their skeleton argument "an apt collocation of words by which to refer to flower remedies made in accordance with the teachings of Dr Edward Bach". I suspect that this also serves to explain in part why there is a substantial minority of retailers who would, even as a matter of first impression, see the expression as having a generic meaning."
21. The sixth category was "members of the public". Neuberger J recorded that most witnesses in this category had been identified by the Survey and were called by BFR. Though in their witness statements they had indicated that they regarded the expressions Bach Flower Remedies or Bach as descriptive of products from a particular source some were under serious misapprehensions as to undisputed facts and under cross-examination most of the others accepted the words were apt to describe remedies made in accordance with the discoveries and recipes of Dr Bach. The judge's conclusion in respect of this category of witness was (judgment p.26):
"My assessment of the effect of the cross-examination of the members of the public called to give evidence by the respondent, and indeed the arguments relating to the cross-examination (including the respondent's analysis of the questions and answers) are very similar to those in relation to the retail witnesses called by the respondent. However, in addition to the points I have discussed in relation to the retailers, it is right to add that it seemed to me that, in the case of the members of the public called on behalf of the respondent, cross-examination established that, as Mr Barter [of NOP] suggested, many witnesses had in mind a type of product rather than a brand when they used the expression "brand".
The seventh category of evidence was that from the four experts called by BFR. The judge considered that their evidence was of more assistance to HHL than to BFR.
22. Having considered the various categories of evidence to which I have referred the judge posed to himself three questions. It is common ground that the questions were the right ones, but in view of some of the argument it is necessary to set them out. They were:
1. Whether the trade mark was properly registrable as at the date of registration without reliance on any distinctive character which it may have acquired as a result of the use which had been made of it;
2. Whether it was properly registrable on the basis of any distinctive character which it had acquired as a result of the use which had been made of it; and
3. Whether it has acquired a distinctive character as a result of the use which has been made of it to date.
23. In his consideration of those questions the judge also considered three propositions submitted to him by leading counsel for HHL. He acknowledged that, though they were perhaps too rigid, they provided useful general guidance. As those propositions, particularly the second, have been criticised it is necessary to set them out. They are:
"1. The name of a product is the very antithesis of a trade mark. It tells you what the product is.
2. So long as a name retains the capacity to function as the name of a product, it is ineligible for registration as a trade mark.
3. The question with which the court is confronted in the present case, and which should be answered in the affirmative on the applicant's contention, is whether the word BACH retains the capacity to function as the name of a product. If it does, then, on the basis of his first two propositions, Mr Hobbs contends that the applications must succeed."
24. The judge dealt in detail with the evidence and submissions made to him in connection with the first mark, namely BACH FLOWER REMEDIES (judgment pp.29-43). I have already referred (para.17) to his conclusion as to the effect of the documentary evidence. His conclusion on the oral evidence was (judgment p.35)
"In my judgment, the effect of the oral evidence was that the expression "Bach Flower Remedies" is understood by the majority in each of the main categories represented by the witnesses (i.e. Bach Practitioners, Retailers, members of the public and experts in the alternative health field), to be descriptive of the Remedies generally, rather than of the Remedies as specifically made by Nelsons or the Bach Centre. In so far as there is (as I accept there to be) a significant body of persons in these categories of witness, who believe that the expression is a badge of origin, it appears to me that the weight to be given to that evidence should be discounted to a substantial extent because the only real commercial source of the Remedies up to about 1988/89 has been the respondent, and the applicant's share of the market since that date has been very slight."
His overall conclusion was:
"Indeed, taking into account all the oral evidence I have heard and all the documentary evidence I have seen, it appears to me that from well before 1979 the expressions "Bach Remedies", "Bach Flowers" and "Bach Flower Remedies", were used to mean, and were understood to mean, the Remedies generically, and not merely the Remedies made or supplied by the Bach Centre, or made up from tinctures supplied by the Bach Centre. Additionally, the evidence seems to me to make it clear that those operating from the Bach Centre represented easily the most important single source for publicising and propagating both the Remedies and the expressions "Bach Remedies" and "Bach Flower Remedies" in the generic sense, from before 1979, at least until the mid or late 1980's."
25. As I have already indicated the judge decided on the basis of these findings that the registrations had been in breach of s.3(1)(c). That conclusion is not challenged by BFR. During the course of argument leading counsel for BFR expressly conceded that the judge had reached the correct conclusion on the first two of the questions he posed for himself. But in stating his conclusion (judgment p.41) the judge also indicated that he considered that the objection applied to the mark BACH FLOWER REMEDIES "both as at 1979 and as at the present time". Later (judgment p. 43) he again made it plain that he considered that HHL had made out its case in relation to the first mark as at 1979 and as at 1998. Similar conclusions were reached in respect of all the other marks save that the signature and device marks were allowed to remain on the register but subject to disclaimers for the words Bach Flower Remedies or Bach.
26. Since Neuberger J gave judgment there have been three important decisions of this court and of the European Court of Justice. I will refer to them in chronological order. The first is Windsurfing Chiemsee Produktions v Huber  E.T.M.R. 585 ("Windsurfing Chiemsee"). In that case the European Court of Justice was concerned with the mark CHIEMSEE which is the name of a well known lake in Bavaria and had been the name given by Windsurfing Chiemsee Produktions to its range of sportswear. The application to register the word as a trade mark was rejected but registration of a particular graphic representation of it was accepted. Huber and another also sold sportswear under the name of CHIEMSEE but his graphic representation of it was different to that registered by Windsurfing Chiemsee Produktions. The latter claimed that, notwithstanding those differences, its mark was being infringed. The second question referred to the European Court of Justice asked what was required for a mark falling within Article 3(1)(c), because it designated geographical origin, to acquire a distinctive character through use for the purposes of Article 3(3). (Articles 3(1)(c) and 3(3) are in the same terms as s.3(1)(c) and the proviso to s.3(1) Trade Marks Act 1994.) The European Court of Justice pointed out that Article 3(3) constituted a major exception to the rules laid down in paras (b) to (d) of Article 3(1). The Court observed (paragraph 46) that the distinctive character to be obtained through such use "must serve to identify the product...as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings" and that in such a case "the geographical designation has gained a new significance and its connotation, no longer, purely descriptive, justifies its registration as a trade mark". (paragraph 47). The guidance to the national court is contained in paragraphs 51 and 52 in these terms
"51. In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because, of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.
52. If, on the basis of those factors, the competent authority finds that the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must hold that the requirement for registering the mark laid down in Article 3(3) of the Directive is satisfied. However, the circumstances in which the requirement may be regarded as satisfied cannot be shown to exist solely by reference to general abstract data such as predetermined percentages."
27. The second case is the decision of this court in Philips Electronics NV v Remington Consumer Products Ltd (Simon Brown, Aldous and Mantell LJJ, 5th May 1999)  E.T.M.R. 816. In that case Aldous LJ observed (pp 822, 823) in relation to the decided cases under Trade Marks Act 1938 and its predecessors
"The 1994 Act was passed to implement the Directive which swept away old law and introduced a new law of trade marks for the Member states of the European Union. That new law, drafted with input from representatives of the Member States, should not be assumed to be the same as the old UK law nor to be different from it. The law must be determined from the Act construed in the light of the Directive. Cases decided under the old law are no longer authoritative. However knowledge of the reasoning in such cases can provide awareness of the types of problems that arise during use of trade marks and general feel for them."
That case concerned the registration of a three headed rotary electric shaver by Philips. When Philips sued Remington for infringing its mark by offering for sale and selling three headed rotary razors Remington claimed that the mark was invalid as having been registered in breach of each of the paragraphs of s.3(1). In relation to s.3(1)(a) Aldous LJ observed (pp. 825, 826) that the proviso as to subsequent use did not apply and said
"That suggests that the capability of distinguishing depends upon the features of the trade mark itself, not on the result of its use. Thus a person who has had monopoly use of a trade mark for many years may be able to establish that it does in fact denote his goods exclusively, but that does not mean that it has a feature which will distinguish his goods from those of a rival who comes into the market. The more the trade mark describes the goods, whether it consists of a word or shape, the less likely it will be capable of distinguishing those goods from similar goods of another trader. An example of a trade mark which is capable of distinguishing is WELDMESH, whereas WELDED MESH would not be. The former, despite its primary descriptive meaning, has sufficient capricious alteration to enable it to acquire a secondary meaning, thereby demonstrating that it is capable of distinguishing. The latter has no such alteration. Whatever the extent of the use, whether or not it be monopoly use and whether or not there is evidence that the trade and public associate it with one person, it retains its primary meaning, namely mesh that is welded. It does not have any feature which renders it capable of distinguishing one trader's mesh from other traders' welded mesh."
In the event the Court of Appeal referred certain questions to the European Court of Justice for preliminary rulings the third of which sought guidance whether use of a sign representing the shape of the goods in question only by a monopoly supplier so that the relevant trade and public associate the goods with that trader and no other could be sufficient. We were informed that before making the reference in June 1999 the Court was not referred to the decision of the European Court of Justice in Windsurfing Chiemsee.
28. The third case is the judgment of the European Court of Justice delivered on 22nd June 1999 in Lloyd Schuhfabrik Meyer v Klijsen Handel BV  E.T.M.R. 690 ("Lloyd Schuhfabrik"). In that case Lloyd Schuhfabrik had registered the mark LLOYD in respect of shoes. Klijsen sold shoes under the mark LOINTS. It was claimed that use of the latter mark infringed the former because of the enhanced distinctive character claimed for the mark LLOYD and the aural similarity between the two. The European Court of Justice applied the principles established in its decision in Windsurfing Chiemsee and reiterated its rejection of the statistical approach. With regard to the public's appreciation of the mark it observed
"25. In addition, the global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the mark in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 5(1)(b) of the Directive - "...there exists a likelihood of confusion on the part of the public..." -shows that the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, to that effect, SABEL, paragraph 23).
26. For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, Case C-210/96 Gut Springenheide and Tusky  E.C.R. I-4657, paragraph 31). However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question."
It is not disputed that the test of the average consumer, applied by the European Court in Gut Springenheide  ECR I - 4657, also decided after the judgment of Neuberger J in the instant case, is to be applied in this case.
Are the marks signs capable of distinguishing goods of one undertaking from those of another?
29. As I have already indicated the first issue is whether the registration of the marks was in breach of s.3(1)(a). That involves considering whether, as signs, they were at the time of registration "capable of distinguishing goods or services of one undertaking from those of other undertakings" as required by s.1(1). The proviso to s.3(1) permitting registration of a mark which has acquired a distinctive character as a result of the use made of it does not apply to the prohibition contained in s.3(1)(a).
30. In view of his conclusion on the application of s.3(1)(c) the judge did not decide this question. But he observed that (judgment p.42)
"The question of distinctiveness under the Act is one of fact, as Jacob J explained in British Sugar. In the sense that there are members of the public and retailers, who (even after Mr Hobbs's cross-examination) see the expression "Bach Flower Remedies" and the word "Bach" as badges of origin, it could be said that the expression and word are "capable" of distinguishing the respondent's Remedies from those produced by others. On the other hand, given the way in which the expression "Bach Flower Remedies" and the word "Bach" are and have been used and understood, there must be a powerful argument for saying that, in common with the robust approach of Jacob J in Philips, I should find against the respondent under Section 3(1)(a) as well."
31. For BFR it is submitted that the judge should have determined that the marks were capable of the distinction required by s.1(1) both because the point was before him and, more importantly, because it was a necessary preliminary to determining the proper construction and application of ss.3(1)(c) and 47(1). It is submitted that the proviso to s.3(1) in its application to paragraphs (b) to (d) alone shows that use is irrelevant to the questions posed by paragraph (a). The word Bach, so it is submitted, is not an ordinary English word and is for that reason a sufficiently capricious addition to render the mark "capable" of providing the distinction required by s.1(1). Reliance is placed on the dictum of Aldous LJ in Philips Electronics NV v Remington Consumer Products Ltd, at pp. 825, 826, to which I have already referred.
32. This is disputed by HHL. In essence HHL submits that the capability of a sign to provide the requisite distinction depends on its meaning and that the meaning of any word may depend in part on its normal use. Therefore, so it is submitted, it is not correct altogether to ignore the use of the word BACH in the period prior to registration.
33. I prefer the submissions for HHL. First, it is not correct to interpret the four paragraphs of s.3(1) as mutually exclusive. There is an obvious overlap between paragraphs (a) and (b) and, as pointed out by Robert Walker LJ in Re: Proctor & Gamble's Trade Mark Application  E.T.M.R. 375, at p. 382, between paragraphs (b), (c) and (d). Second, the use of the word "sign" as the subject matter of paragraph (a), as opposed to "trade marks" in the remaining sub-paragraphs shows that compliance with that paragraph is a preliminary to the application of the rest. Thus paragraphs (b) to (d) each assume that the sign is capable of the requisite distinction. Third, it is in the context of a sign which is capable of affording the requisite distinction that the proviso requires consideration of whether by usage it has in fact done so. It would be absurd to apply the proviso to paragraph (a) as well; if the sign is not capable of affording the distinction there is no point in considering whether by use before the application for registration it has in fact done so. Fourth, it follows from the foregoing that the application of the proviso to paragraphs (b) to (d) alone cannot operate as an implied prohibition on the consideration of prior use as it affects the meaning of the sign for the purposes of paragraph (a).
34. I accept the submission that the meaning of a word may depend on its usage. It is not uncommon for a proper name, by use, to acquire an adjectival meaning which is descriptive of the article to which it is applied. Examples given in the course of argument demonstrate the point. Thus the terms "a Bunsen burner" and "a Wellington boot" are wholly descriptive and cannot, without more, distinguish such burners or boots of one undertaking from those of another. In accordance with that use the expression has become the common name in the trade for the product in question. cf s.46(1)(c). The question is whether or not the word "BACH" had, by 1979, acquired such a meaning so as to be incapable, without more, of affording the requisite distinction. If it had then s.1(1) is not satisfied, the word "BACH" cannot be a capricious addition so that registration of the sign would be in breach of paragraph (a); if it had not then the word "BACH" is an addition to the words "flower remedies" which is "capricious", because it is not purely descriptive, so that both the expression BACH FLOWER REMEDIES and the word BACH are capable of affording the necessary distinction. Accordingly I accept the submission that it is both permissible and necessary in considering the application of paragraph (a) to determine the meaning of the word as used at the time of the application for registration. I do not understand Aldous LJ in Philips v Remington, in the passage I have quoted, to have been considering the relevance of use to the meaning of the word.
35. The usage in question must be by those engaged in the relevant trade or activity. Normally that will be the usage of the average consumer of the goods in question as described in Lloyd Schuhfabrik. Obviously the evidence on that question is not limited to those who are consumers or end-users but may extend to others concerned in the trade such as manufacturers, wholesalers and retailers. But I do not think that the court is assisted by repetitious evidence from individuals put forward by the parties, whether expressly or not, as archetypal average consumers or end-users for, by definition, no one individual is such a consumer or end-user and the issue cannot be resolved by counting heads. We were told that the judges before whom cases of this sort are heard have increasingly imposed restrictions on the quantity of such evidence they are prepared to admit. In my view that practice is to be encouraged.
36. The judge recognised that in some respects the evidence tended to show that the word "BACH" was used in a distinctive sense. Thus at page 23 he recorded that in the case of some retailers
"when an employee of [BFR's] solicitors went into the relevant shops and asked for a Bach Flower Remedy, the relevant witness (or an assistant in the shop) reacted as if reference was being made to [BFR's] products only."
At page 35 he recognised there to exist
"a significant body of persons in these categories of witness [Bach Practitioners, retailers, members of the public and experts], who believe that the expression is a badge of origin, [but considered that] the weight to be given to that evidence should be discounted to a substantial extent because the only real commercial source of the Remedies up to about 1988/89 has been the [BFR], and [HHL]'s share of the market since that date has been very slight."
At page 42, in the passage I have already quoted, the judge again accepted that there were members of the public and retailers who, notwithstanding their cross-examination, saw the expression "Bach Flower Remedies" and the word "Bach" as badges of origin.
37. For my part I do not think that these qualifications sufficiently detract from the judge's clear findings as to the meaning of the expression and word in 1979 and thereafter to justify a conclusion that they then complied with s.1(1). The decision of the European Court of Justice in Lloyd Schuhfabrik came after Neuberger J had given judgment in the instant case. Thus he had no argument on or opportunity to consider the average consumer test. It was not suggested by either side that in those circumstances we should order a new trial. It was accepted that we should decide the issue as best we can in the light of the judge's findings.
38. On that basis the evidence of a capability to distinguish to which I have referred should be rejected as not applicable to the average consumer as defined by the European Court of Justice. Such a person is deemed to be reasonably informed, reasonably observant and circumspect. But the actions and beliefs of the persons who prompted the comments of the judge I have referred to in paragraph 36 should not, in my view, be attributed to the average consumer. In the case of the first category the relevant action appears to have been prompted by carelessness and ignorance, which are not to be attributed to the average consumer. In the case of the second the judge rejected the evidence as sufficient to undermine his clear findings at page 38 that in 1979 and thereafter the expression Bach Flower Remedies and the word Bach would have been used and understood in a generic sense. In those circumstances I cannot see how any different understanding can be attributed to the average consumer. If the average consumer is to be regarded as reasonably informed, observant and circumspect then he must know the sense in which the word Bach was used and understood and that sense was generic.
39. For these reasons I conclude that the expression Bach Flower Remedies and the word Bach in both 1979, 1989 and 1991 failed to satify s.1(1) so that the registrations of those marks was in breach of s.3(1)(a). It follows that I would dismiss the appeal on this basis. However this was not the ground on which the application was decided by the judge. Moreover in reaching this conclusion I have, inevitably, relied on propositions not advanced before the judge. As the second issue was fully argued I consider that I should deal with it also.
Has the expression Bach Flower Remedies and the word Bach acquired a distinctive character in consequence of their use since registration?
40. It is necessary to approach this issue on the footing that (a) contrary to my conclusion on the first issue, the expression and word were at the time of registration capable of affording the distinction required by s.1(1), but (b) as conceded by BFR, registration was in breach of s.3(1)(c) because the expression and word consisted "exclusively of signs or indications which may serve, in trade, to designate the kind, quality...or other characteristics of goods". In those circumstances the question is whether, in the terms of s.47(1), "in consequence of the use which has been made of [the mark], it has after registration acquired a distinctive character in relation to the goods of" BFR. Counsel for BFR suggested that a similar point arises in respect of all marks registered after 1979 because of the terms of the proviso to s.3. But he accepted that if he could not establish his s.47 defence as at the time of the application (or the hearing) then he would be unable to establish a defence under the proviso at any earlier time after 1979. This helpful and realistic concession has enabled us to concentrate on the events between 1979 and 1997.
41. The issue is one of fact. It is not disputed that the onus of proving the defence lay on BFR. The judge made no finding to support it. BFR contends that he should have done. It contends that although the judge correctly posed the three questions to which I have already referred (paragraph 22) he only answered the first two of them. It is submitted that the judge gave no proper consideration to the proviso to s.3 or the comparable provisions of s.47. It is suggested that the judge was misled by the second proposition advanced by counsel for HHL to which I have already referred (paragraph 23) into applying principles established by earlier cases decided in England but inconsistent with the principles apparent from the Directive and the decisions of the European Court of Justice.
42. I have no hesitation in rejecting the first two submissions. The formulation of the third question inevitably reflected the provisions of s.47 and, in respect of marks registered between 1979 and 1997, the proviso to s.3 as well. Those two provisions were fully set out on pages 27 and 28 of his judgment and there is no reason to think that the judge did not have them in mind. His answer to the third question was given in the passages on pages 41 and 43 to which I have already referred (paragraph 25). In my view those answers necessarily involved express findings of fact that the marks had not acquired a distinctive character in consequence of their use after 1979.
43. With regard to the third and fourth submissions it is necessary to refer to the reference by Neuberger J to the dictum of Viscount Maugham in Shredded Wheat Co. v Kelloggs (1940) 57 RPC 137. At page 30 Neuberger J said
"While I am persuaded by Mr Bloch that the three propositions propounded by Mr Hobbs are perhaps somewhat too rigid, it does seem to me that they have considerable force, and at least provide useful general guidance. In that connection I derive assistance from certain passages in well-known judgments.
In The Shredded Wheat Co. Ltd -v- Kellogg Co. of Great Britain Ltd (1940) 57 RPC 137, Viscount Maugham said at 147 that:
"[I]t may be useful to cite the statement by Mr Justice Parker in In re Gramophone Company's Application  2 Ch. 423 at page 437 since he was a master in this branch of law: "For the purpose of putting a mark on the register, distinctiveness is the all-important point, and in my opinion, if a word which has once been the name of the article ought ever to be registered as a trade mark for that article, it can only be when the word has lost, or practically lost, its original meaning. As long as the word can appropriately be used in a description of the articles or class of articles in respect of which a trade mark is proposed to be registered, so long, in my opinion, ought the registration of that word for those articles or that class of article to be refused.""
Neuberger J also referred to the statement of Jacob J in British Sugar  RPC 281 at 302 to the effect that for a common descriptive term to acquire a distinctive character it must be shown that its original meaning has been "displaced".
44. Counsel for BFR submitted that these statements failed to recognise two principles discernible in the new Act and the decisions of the European Court of Justice. The first is the recognition apparent from ss. 3(1)(c) and 11(2)(b) that a mark may be distinctive, and therefore registrable, notwithstanding the existence of the attributes referred to in s.3(1)(c), yet capable of honest use in a descriptive sense in relation to the same attributes as permitted by s.11(2). It is contended that there may co-exist in a mark both a distinctive and descriptive meaning. Reliance is also placed on the statement in paragraph 52 of the judgment of the European Court of Justice in Windsurfing Chiemsee to the effect that it suffices that the mark is distinctive to "at least a significant proportion" of the relevant class. The converse of that proposition, it is suggested, is that the mark is descriptive to the rest of the relevant class. The suggested conclusion, having coalesced the two points, appeared to be that for the purposes of the proviso to s.3(1) and s.47(1) a mark might acquire a distinctive character from use if a significant proportion of the relevant class recognised it to bear both a distinctive character and descriptive connotations.
45. I do not accept those submissions either separately or as coalesced. First, it has never been the law, and counsel for HHL did not suggest that it had been, that the mark must be universally recognised as distinctive. If it were otherwise the rights of traders would be dependent on the views of the ignorant and illiterate. The observations of Viscount Maugham and Jacob J to which the judge referred were not directed to the meaning of a word or mark to the totality of mankind. What is necessary, in the words of the Act and the Directive, is that the word or mark should "distinguish the goods or services of one undertaking from those of other undertakings" (s1(1)) so as "to guarantee the trade mark as an indication of origin" (10th Recital to the Directive). If to a real or hypothetical individual a word or mark is ambiguous in the sense that it may be distinctive or descriptive then it cannot comply with the requirements of the Act for it will not provide the necessary distinction or guarantee. It is in that sense that a common or descriptive meaning must be displaced. It is also in that sense that I accept the second submission made by counsel for HHL before Neuberger J.
46. In my view the provisions of s.11(2) do not suggest otherwise. Use of an identical sign on identical goods constitutes infringement by virtue of s.10(1) without more. In any other case it is necessary to show a likelihood of confusion S10(2), or, the taking of unfair advantage of or detriment to the distinctive character or repute of the mark, S10 (3) S.11(2) concerns use in accordance with honest practices of indications of the designated type. It says nothing about what is required by way of a distinctive character so as to justify the registration of the mark in the first place. It certainly does not indicate that the mark can be both distinctive and descriptive so that if used on identical goods it would not constitute infringement under S.10 (1).
47. In my view it is clear that the test laid down by the Act and the principles established or confirmed by the European Court of Justice in Windsurfing Chiemsee and Lloyds Schuhfabrik
require BFR to establish that in consequence of their use between 1979 and 1997 the expression BACH FLOWER REMEDIES and the word BACH have to a significant proportion of the relevant class of persons, sc. the average consumer of such goods, acquired a distinctive character in the sense of distinguishing such goods manufactured by BFR from the same or similar goods manufactured by other undertakings. It is true that the questions referred by this court to the European Court of Justice in Philips v Remington might suggest that the principles to be applied are not as clear as I consider them to be. But that court, like Neuberger J, did not have the benefit of the two decisions of the European Court of Justice in Windsurfing Chiemsee and Lloyds Schuhfabrik.
48. Given that the formulation of the test is not necessarily the same as that applied by Neuberger J it is appropriate to consider the facts relied on by BFR in its attempt to persuade this court to arrive at a different conclusion. The first is the expansion, as demonstrated by the evidence of Mr Robert Nelson Wilson, of the business of the Bach Centre and of BFR in flower remedy products from 1981 to 1989 and from 1991, when his company acquired the exclusive licence from the Bach Centre, to 1996; an expansion by a factor of 10 in the former period and by a factor of 2 in the latter. In all years in both periods the relevant business of the Bach Centre or of BFR dwarfed that of HHL. As counsel for BFR emphasised all the marks used by BFR in both periods incorporated the word BACH. Secondly, BFR relied on the findings of the judge to which I have referred in connection with the first issue to the effect that in four cases a request by a customer for Bach Flower Remedies was treated by the shop assistant as a request for BFR's product and that, notwithstanding their cross-examination, some retailers and members of the public continued to regard the expression and word as badges of origin.
49. In my view these points are insufficient to justify a finding such as BFR seeks. First, use of a mark does not prove that the mark is distinctive. Increased use, of itself, does not do so either. The use and increased use must be in a distinctive sense to have any materiality. Whilst omnibus surveys such as that carried out by NOP in 1997 are of limited value in the determination of the question of distinctiveness it is noteworthy that out of 9,600 people interviewed over five weeks only 30 were considered to be capable of giving evidence in support of the case of BFR. Thus even as a witness gathering exercise it was hardly successful. But this is not surprising given the judge's conclusion that in 1979 the expression and word were used and understood to refer to remedies made in accordance with the teachings of Dr Bach. Second, for the reasons I have already given I do not think that the apparent assumption of the four shop assistants is to be attributed to the average consumer of the relevant goods. Third, and for similar reasons, I do not think that the views of those retailers and members of the public who continued to regard the expression and word as distinctive notwithstanding their cross-examination are to be attributed to the average consumer either.
50. But even if I am wrong in rejecting the matters on which BFR relies it is still necessary to weigh those matters in the scale against the countervailing matters relied on by HHL. The first is the material published between 1979 and 1997. I have already referred to the judge's findings that, though equivocal, it was more consistent with the contentions of HHL than of BFR. Support for the contentions of HHL is plainly derived from the republication with extensive colour illustrations in 1990 of the work of Miss Weeks and Mr Bullen originally published in 1964 entitled "The Bach Flower Remedies" and the British Homopathic Pharmacopia published in 1993 by the Scientific Committee of the British Association of Homopathic Manufacturers of whom two out of five members were associated with BFR's holding company. In each case the references to Bach Flower Remedies or to Bach are descriptive and not distinctive. It is true that the extent of the distribution and use of these publications was not explored in the evidence but the natural inference, in the absence of evidence to the contrary, is that both had substantial circulations in the trade in herbal or homopathic medicine.
51. Finally it should not be overlooked that at the hearing before the judge BFR conceded that the expression Bach Flower Remedies and the word Bach were apt to refer to flower remedies made in accordance with the teachings of Dr Bach. BFR accepted that it could not prevent others applying the teachings of Dr Bach commercially nor using such expression or word in the title to a book. In my view those concessions were rightly made but are inconsistent with the case now advanced. As counsel for HHL pointed out, if his clients are, as conceded, entitled to represent to the world at large that its goods are flower remedies made in accordance with the teachings of Dr Bach then they must be entitled, in order to avoid such a circumlocution, to describe them as "Bach Flower Remedies".
52. For all these reasons, in my view, BFR has failed to make out the defence afforded by s.47(1). In any event such a defence would be inconsistent with the judge's findings of fact which are not challenged by BFR. Accordingly I would determine the second issue also in favour of HHL.
53. Thus, having decided both issues against BFR, I would dismiss this appeal.
Thorpe LJ: I have had the advantage of reading in draft both my Lords' judgments with which I am in complete agreement.
Chadwick LJ: I agree that this appeal must be dismissed for the reasons which have been set out by Lord Justice Morritt. It is unnecessary for me to do more than add some observations of my own in relation to the first of the two issues which he has identified.
The application before the judge was for a declaration of invalidity pursuant to section 47(1) of the Trade Marks Act 1994:
47(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).
Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
The respective dates of registration of the relevant words or signs as trade marks were such that the application was made in relation to trade marks registered under the Trade Marks Act 1938; but, for the purposes of the application, the provisions of the 1994 Act were deemed to have been in force at all material times - see section 105 of, and paragraphs 1(1) and 18(2) of schedule 3 to, the Act of 1994.
Accordingly, it was for the applicant, Healing Herbs Limited, to show that registration of the relevant words or signs, at the respective dates at which those words or signs were registered as trade marks, was in contravention of one or more of the prohibitions in section 3 of the Act of 1994. It sought to do so by reliance only on the provisions of section 3(1):
3(1) The following shall not be registered -
(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
Provided that a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.
Section 3(1) has to be read in conjunction with section 1(1) of the Act:
1(1) In this Act a "trade mark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.
The applicant's primary contention, before the judge and (by way of respondent's notice) before this Court was that neither the words BACH FLOWER REMEDIES nor the word BACH on its own were, as at the dates of their respective registration (24 February 1979 and 14 March 1989), capable of distinguishing the goods of Bach Flower Remedies Limited ("BFR"), or its predecessors as owners of the trade marks, from the goods of other undertakings. If that contention were made good it would follow that those words did not satisfy the requirements of section 1(1) and could not be, and could not be registered as, a trade mark - see section 3(1)(a). Further, if that contention were made good, neither the proviso to section 3(1) nor the proviso to section 47(1) of the Act of 1994 could assist BFR.
The judge did not find it necessary to decide the question whether registration had been prohibited by section 3(1)(a) of the Act of 1994. He was content to decide that the words fell within section 3(1)(c) of the Act; that they had not, prior to registration, acquired a distinctive character as a result of use; and that they had not, after registration, acquired a distinctive character in relation to the goods for which they been registered. For my part, I think it is necessary, in the present case, to decide whether the words BACH FLOWER REMEDIES, or the word BACH alone, did satisfy the requirements of section 1(1) at the relevant dates - so that registration was not prohibited by section 3(1)(a) - before going on to consider the other paragraphs in section 3(1) and the provisos to that section and to section 47(1). The reason, in my view, is that in a case (such as the present) where the words have or may have acquired an established meaning through use at some date before registration it is impossible to reach a proper conclusion under either of the provisos without first identifying what that meaning was; and deciding whether (having acquired that meaning) the words were any longer capable (if they once were) of having a distinctive character or of acquiring a distinctive character by reason of further use after that date - whether before or after registration.
It is, I think, self-evident that there are words so commonly used to describe a product that they could never be capable of distinguishing the goods of one undertaking from the goods of another undertaking - that is to say, to adopt the language of the tenth recital to the EC Directive to which the Act of 1994 gives effect (Council Directive No 89/104/EEC of 21 December 1988), the words cannot fulfil the function of a registered trade mark which is to guarantee the trade mark as an indication of origin. "Soap" for soap is an oft-cited example of such a word. But, equally, there are words which, not being in common use at the time when they are first used in connection with a new product, are capable of distinguishing that product from the products of the same nature having a different origin. Contrived or "fancy" names provide an obvious example. So also, in most circumstances, do personal names - in particular, the personal name of the originator of the new product. But, in such cases, the words, although capable of being distinctive of origin, will not actually distinguish the goods of one undertaking from the goods of another until they have become attached to the former through use. Words in the first class fall outside section 1(1) and within 3(1)(a) of the Act of 1994. Words in the second class fall, at the outset, within sections 1(1) and 3(1)(b) of the Act - but they may qualify for registration thereafter through use, under the proviso. When they do, it will be because they have acquired a distinctive character. They will then no longer fall within section 3(1)(b) of the Act.
It is important to keep in mind that section 3(1)(b) of the Act refers to "trade marks" which are devoid of distinctive character. It recognises, therefore, that the signs which fall within it are capable of distinguishing the goods of one undertaking from the goods of another - for otherwise the sign could not be a "trade mark" within section 1(1) - but that they do not, in fact, do so. By contrast, section 3(1)(a) does not refer to "trade marks", but to "signs". The inter-relationship of paragraphs (a) and (b) in section 3(1) - read with the proviso - serves to identify three categories of sign: (i) those which are not capable of distinguishing the goods of one undertaking from those of other undertakings - section 3(1)(a); (ii) those that have the capacity to distinguish, but which do not do so - section 3(1)(b); and (iii) those that have the capacity to distinguish and (whether from the outset or through use) actually to do so. But, consistently with that analysis, there must be a fourth category - or, to put the point in a slightly different way, category (i) subsumes two sub-categories: (i)(A) those signs which have never been capable of distinguishing the goods of one undertaking from those of other undertakings; and (i)(B) those which once had the capacity to distinguish but have, through use, ceased to be capable of doing so.
Mr Thorley QC, counsel for BFR submitted that the word "Bach" - being a personal name - necessarily satisfied the requirements of section 1(1) of the 1994 Act; and so fell outside the prohibition in section 3(1)(a). The fallacy which underlies that submission, as it seems to me, is that the requirements in section 1(1) were satisfied - or not satisfied, as the case may be - "once and for all" at the time when the word was first used in connection with flower remedies prepared in accordance with Dr Edward Bach's teachings.
If a word - such as a contrived or personal name - which, absent use, is devoid of any distinctive (or descriptive) character can acquire a distinctive character through use, there can be no reason in principle why the same word should not, instead, acquire a descriptive character through use. If it does so, there can be no reason in principle why it should not, then, cease to be capable of having the distinctive character which is the essential quality of a trade mark. At that point it will fall outside section 3(1)(b) - because it will no longer be a trade mark. It will also, necessarily, fall outside sections 3(1)(c) and (d) - for the same reason. It will be precluded from registration by section 3(1)(a).
The first question in the present case, as it seems to me, is whether, by 1979, the words BACH FLOWER REMEDIES had become so well established as a generic description of flower remedies prepared in accordance with the teachings of Dr Edward Bach that they had lost the capacity to distinguish the products of BFR from the products of other undertakings. If they had, then it would be extremely difficult (although conceptually possible) to hold that the word BACH on its own had the capacity to distinguish in 1989.
The test of capacity to distinguish must, as it seems to me, reflect the test which is to be applied, following the decisions of the Court of Justice in Gut Springenheide and Tusky  ECR I-4567 (at paragraph 31) and Lloyd Schufabrik Meyer v Klijsen Handel BV  ETMR 690, in determining whether there is a likelihood of confusion in the context of article 5(1)(b) of Directive 89/104/EEC. That has not been in dispute on this appeal. The test is whether the average consumer of the category of products concerned would recognise the words as distinctive - that is to say, as a guarantee of origin. For that purpose the average consumer is deemed to be reasonably well informed and reasonably observant and circumspect.
Mr Thorley relied, understandably, on the observations of the Court of Justice in Windsurfing Chiemsee Produktions v Huber  ETMR 585, at paragraph 52, to which Lord Justice Morritt has already referred:
52. If, on the basis of those factors [market share, geographical spread, long-standing use, etc.] the competent authority finds that a relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must hold that the requirement for registering the mark laid down in Article 3(3) of the Directive is satisfied. [emphasis added].
Article 3(3) is in the same terms as the proviso to section 3(1) of the Act of 1994. But it is clear that, in its later decision in Lloyd Schufabrik the Court of Justice treated those observations as consistent with the average consumer test. The key, as it seems to me, lies in an appreciation that "the relevant class of persons" to which the Court was referring in Windsurfing Chiemsee comprises average consumers who have the characteristics identified in Lloyd Schufabrik - that is to say, consumers of the relevant product who are reasonably well informed and reasonably observant and circumspect. What is required, in the context of the proviso, is that persons in that class, or at least a significant proportion of persons in that class, identify the words or word in question as distinctive of the origin of the goods. But, before the need to consider the proviso can arise, it is necessary that the words or word in question should have the capacity to distinguish. In that context, the question is whether the words or word are so widely understood amongst the relevant class in their generic or descriptive meaning that they have become incapable of identifying, in the minds of the members of that class, the goods as originating from a particular undertaking. To put the point another way, the test will not be satisfied, in the context of sections 1(1) and 3(1)(a) of the Act of 1994, if consumers of the relevant product who are reasonably well informed and reasonably observant and circumspect, or at least a significant proportion of such consumers, would regard the words or word as generically descriptive; so that they would find it impossible to say that the words or word identify, for them, the goods as originating from a particular undertaking.
I agree with Lord Justice Morritt that, in seeking to apply the test, the court is unlikely to be assisted by repetitious evidence from individual consumers, put forward by each party as the embodiment of the average consumer. The task for the court is to inform itself, by evidence, of the matters of which a reasonably well informed and reasonably observant and circumspect consumer of the products would know; and then, treating itself as competent to evaluate the effect which those matters would have on the mind of such a person with that knowledge, ask the question: would he say that the words or word identify, for him, the goods as originating from a particular undertaking.
As Lord Justice Morritt has pointed out, a reasonable well informed and reasonably observant and circumspect consumer would know, if it be the case, that the words or word are widely used in a generic or descriptive sense - even if he is, himself, aware that they are also used in a distinctive sense. With that knowledge, it seems to me impossible for him to say that the words identify, for him, the goods as originating from a particular undertaking. Knowing, as he does, that the use of the words may be intended as descriptive, he cannot assert that he understands them as necessarily distinctive.
The judge was not in a position to apply the test as now explained by subsequent decisions of the Court of Justice. But this Court can do so; on the basis of the findings of fact which the judge has made. For the reasons set out by Lord Justice Morritt, which it would be superfluous for me to rehearse, I am satisfied that the application of the correct test leads to the conclusion that, by the dates of registration, the words BACH FLOWER REMEDIES and the word BACH had lost the capacity to distinguish which is essential to a trade mark under the Act of 1994.
I would dismiss this appeal.